Court “Sheds Light” on Claim Term “Illuminating”
April 23, 2004
Last Month at the Federal Circuit - May 2004
Judges: Michel (author), Clevenger, and Schall
In Scanner Technologies Corp. v. ICOS Vision Systems Corp., No. 03-1465 (Fed. Cir. Apr. 23, 2004), the Federal Circuit vacated and remanded the district court’s SJ ruling that ICOS Vision Systems Corporation, N.V. (“ICOS”) did not infringe U.S. Patent Nos. 6,064,757 (“the ‘757 patent”) and 6,064,756 (“the ‘756 patent”).
Scanner Technologies Corporation (“Scanner”) owns the ‘757 and ‘756 patents, which are directed to methods and systems, respectively, for electronic component inspection. The patents disclose the application of triangulation techniques using images of an illuminated Ball Grid Array (“BGA”) device to determine the precision to which solder balls in the BGA device are at the same height. Among other elements, claim 1 of the ’757 patent recites the step of “illuminating” and claim 1 of the ‘756 patent recites “an illumination apparatus.” The district court construed both uses of the term as being limited to only one illumination source. The district court recognized that the phrase “illumination source” appears nowhere in the claims of the ’756 patent, but concluded that the difference between the correct claim term “illumination apparatus” and the phrase “illumination source” was not significant for purposes of the claim construction. On the basis of this construction, the district court ruled under SJ that ICOS did not infringe the ‘757 and ‘756 patents.
On appeal, the Federal Circuit held that the district court’s imprecise use and apparent construction of the phrase “illumination source” was harmless error because the district court had made clear that its decision and reasoning applied to the actual claim language.
The Federal Circuit also considered whether the district court failed to account for the difference between a system claim and a method claim when it concurrently construed, and limited, an apparatus-claim term and a method-claim term together. The Court concluded that the district court did appreciate the difference between a system claim and a method claim, and ruled that the apparatus “an illumination source” and step “illuminating” may be properly construed together.
Notwithstanding the holdings above, the Federal Circuit concluded that the district court had erred by limiting these claim terms to only a single illumination source. The Federal Circuit reiterated that a patentee must evince a clear intent to limit the articles “a” and “an” to mean “only one” when used in an open-ended claim that contains the transitional phrase “comprising.” The Federal Circuit found no evidence of such clear intent in the prosecution or claims of the ’757 and ‘756 patents.